Decisions It Cites

Decisions That Cite It

In re Prater I [415 F.2d 1378, 1968]

Rules & Quotes

[JUDICIAL ERROR - MENTAL] {1} This court has deemed it to have been thoroughly established by decisions of various courts that purely mental steps do not form a process which falls within the scope of patentability as defined by statute. ... Don Lee, Inc. v. Walker, 61 F.2d 58, a decision by the United States Circuit Court of Appeals of the Ninth Circuit, which held, as expressed in a U.S. Pat. Q. headnote: "Patent is invalid if for mathematical formula for solution of problem in dynamics; special application of general formula known to engineering world cannot be patented; nor can formula for determining dynamic forces in motor shaft when the forces were fully recognized and considered by engineers in prior publications." ... [Also] Haliburton Oil Well Cementing Co. v. Walker, 146 F.2d 817, also decided by the United States Circuit Court of Appeals of the Ninth Circuit ... Our most recent decision respecting mental processes was rendered March 6, 1951, in the case of In re Abrams, 188 F.2d 165. It is deemed apposite here.

[JUDICIAL ERROR - MENTAL] The Federal Circuit committed judicial error by labelling the false citations of Don Juan by Haliburton and Abrams as "thoroughly established". Over the years, there was little thinking about mental steps by these courts, beyond the erroneous citations of Don Juan. In re Yuan should not be a precedent for any decision on mental steps. Indeed, in 1969, in the case In re Prater II (415 F.2d 1393), the Federal Circuit rejected the entire line of reasoning from Haliburton to Yuan. That is, in In re Prater II, the CAFC rejected its own earlier conclusion that "This court has deemed it to have been thoroughly established ...", i.e., that this quoted statement was a lie.